Hill-Rom Services, Inc. owned US Patent No. 7,669,263, which was subject to an inter partes reexamination proceeding initiated by Stryker Corp., in which the Patent Trial and Appeal Board (“Board”) affirmed an Examiner’s rejection of claims 1, 14–15, and 31–32 of the patent. The patent related to a hospital bed that includes a control system, which, in turn, includes various controls, interfaces, sensors, and actuators that communicate via a plurality of modules connected to a network. During the proceeding, Hill-Rom amended claim 1 by adding language requiring the control system to “periodically” verify functionality of the modules. Claim 1 is listed below:

1. A patient-support apparatus comprising a control system including a serial data bus and a plurality of control modules coupled to the serial data bus, each control module including a microcontroller and a transceiver operable to communicate over the serial data bus by sending a message out on the serial data bus, wherein the control system periodically verifies the functionality of each module present, wherein each of the modules is operable to monitor communications on the serial data bus to determine whether to process a particular message.

While the Federal Circuit disagreed with numerous claim interpretations and determinations by the PTAB, an interesting aspect of the decision relates to the particular instructions on remand. Specifically, the PTAB decision affirmed rejections of the claims based on numerous separate grounds, but the decision only addressed two references (Kummer and Zeltwanger). The PTAB often takes this shortcut for several reasons. First, it reduces their workload. Second, PTAB judges may believe that it helps insulate their opinion and reduce a chance of reversal on appeal since while one of their rejections may be improper, maybe another one will be proper.

However, here, the Federal Circuit clearly indicates their unhappiness with the PTAB's approach. Judge O'Malley, in no uncertain terms, creates a clear disincentive for the PTAB's shortcut - she confirms that the PTAB is prohibited for making any new rejections based on references that were not explicitly included in their previous opinion:

Although the Board affirmed the Examiner’s rejections with respect to the other prior art of record, the Board’s analysis was “specifically directed to Kummer” as a primary reference and did not “address each of the rejections individually.” Board Decision, 2016 WL 1270198, at *3. Neither Hill-Rom nor the PTO addresses in meaningful detail any prior art references other than Kummer and Zeltwanger. Thus, because the other references are not before us on appeal, we vacate the Board’s decision as to claims 1, 14–15, and 31–32 with respect to all prior art combinations other than those involving Kummer and Zeltwanger. On remand, the Board is not permitted to reconsider its invalidity determinations based on references other than Kummer and Zeltwanger. (emphasis added)

Thus, the PTAB is now unable to utilize the other prior art that formed separate rejections made by the Examiner. Clearly this approach illustrates frustration by the reviewing court and does not aim to allow the PTAB to simply "correct" the examination by the examiner. While the Federal Circuit is correct to limit the PTAB in this way, it also illustrates the fundamental problem with the PTAB in the first place and gives more ammunition to those calling for elimination of the PTAB.